July 2021
Natural Products Consulting
By Morgan E. Smith; Margaret A. Esquenet
In the United States, copyright law protects original works of authorship including literary, dramatic, musical, and artistic works, but generally does not protect facts, listings of ingredients, or recipe instructions. Copyright protection vests automatically as soon as a work is fixed in a tangible form (e.g., written down or otherwise recorded). Registration with the U.S. Copyright Office is not required unless the copyright owner seeks to enforce rights through litigation. A copyright grants the owner the exclusive right to reproduce and distribute copies of the work; prepare derivative works (such as a movie based on a novel); and publicly perform, display, and broadcast the work.
Copyright protection is generally geared toward literary and artistic works, such as books, articles, videos, music, and works in the visual arts (e.g., graphic designs, photos, sculptures, paintings, etc.). As such, it can be used to protect logos (like the Starbucks “Siren” logo, U.S. Copyright Reg. Nos. VA0000875932 and VA0001768520), ornamental product designs, packaging shapes, including catalog images, etc.
Nestle Purina Kitten Chow Advertisement - “Child with Kitten”
U.S. Copyright Reg. No. VAU001350628
The list of works that are copyrightable in the United States is not exhaustive and was intentionally left open-ended to allow for the development of new forms of expression and technology.
Copyright protection cannot be claimed in a “useful article,” or something that has an “intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”[1] Items that have been denied copyright protection as useful articles include clothing,[2] light fixture housings,[3] jewelry,[4] and mannequins.[5] Protection does extend to elements of a useful article that are physically or conceptually separable from the article, and original to the author. For example, in Mazer v. Stein, the United States Supreme Court held that although a lamp is a useful article not entitled to copyright protection, the sculpture of a woman that constituted the base of the lamp was separable from the utilitarian object and protectable.[6] Thus, others were prohibited from copying the sculpture, but were free to make lamps, even lamps with female sculptures serving as the base, so long as the sculptures were not substantially similar to those protected by the copyright.
Also not protectable are a variety of works that lack sufficient original authorship, as determined by the U.S. Copyright Office or the courts. Examples include:
In the food and beverage industry, recipes per se are not protected by copyright, but the creative content a company generates, such as website content, marketing content, photographs of products, text in a cookbook, blogs, product packaging, original artwork, and designs are likely protectable.
Because copyright law does not protect mere ideas, facts, or formulas, a chef cannot secure rights for being the first to come up with the idea of creating a certain style of food (e.g., art-inspired pastries). Likewise, merely listing ingredients in a recipe is not copyrightable because recipes are considered facts and formulas. These limitations allow chefs to continue borrowing or sharing recipes and similar ideas from others without violating copyright laws, although doing so could violate other intellectual property rights like trade secrets.[8]
A work must meet two basic requirements to be protected as a copyrighted work— originality and fixation.
To be original, a work must be independently created and be sufficiently creative to warrant copyright protection. Independent creation requires that the author create the work, not copy from others.[9] The work must also contain a sufficient amount of creativity so as to be more than a trivial variation on preexisting works. The threshold for creativity is low, and has been described as “very slight,” “minimal,” and “modest.”[10]
Copyright rights arise automatically when a work is “fixed in a tangible form expression.”[11] Fixation occurs when the expression “is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”[12] A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of copyright protection if a fixation of the work is made simultaneously with its transmission (e.g., recording a television broadcast). Examples of unfixed works include speeches that are not written or recorded, gardens, food stylizations, ice and snow sculptures, chalk drawings etc., unless such works have been captured by some method of recordation.
The copyright rights in a work vest it its author or authors.[13] An exception to this general rule is the “work made for hire.” When a work is one made for hire, as often seen in the food and beverage and other industries, the employer is considered the author and copyright ownership resides with the employer.[14] Under the Copyright Act a work can be made for hire in two ways:
As mentioned earlier in this chapter, an original work of authorship is automatically protected by copyright as soon as it is fixed in a tangible medium of expression. Thus, registering a work with the U.S. Copyright Office is not necessary to obtain copyright protection.[16] However, a U.S. author must have a registration (not just a pending application) before filing suit for copyright infringement.[17] Thus, the benefits of registration (discussed below), particularly when combined with the relatively low of cost of filing an application,[18] make early registration the best strategy.
If registration is made before publication or within five years of a work’s publication, the Certificate of Registration constitutes evidence of the validity of the copyright and the facts stated in the certificate.[19] This can be important procedurally in a copyright infringement litigation, as it creates a presumption of validity, including the:
In addition to these procedural and evidentiary advantages, timely registration also provides eligibility for recovery of statutory damages and attorneys’ fees and costs in litigation. Thus, a registration can sometimes be an effective bargaining chip during enforcement, as infringers will have to consider the possible assessment of statutory damages and attorneys’ fees. In contrast, an infringer who knows that the copyright owner will be required to establish actual damages may have less incentive to cooperate with the copyright owner. Registrations can also be useful in enforcing against copyright infringement online, as many online service providers respond more rapidly to claims of copyright infringement associated with registered copyrights.
As a practical matter, copyright registration also makes exploiting and acquiring copyright rights easier and less risky because works that are registered with the U.S. Copyright Office are assigned unique registration numbers. These numbers, together with copies of the certificates of registration, make contract negotiation and drafting less ambiguous—each party understands which rights are at issue.
The United States has a well-developed formal system for registering copyright rights with the United States government. Virtually all of the information needed to obtain, complete, and submit a copyright application is available from the U.S. Copyright Office, which is a part of the U.S. Library of Congress.[20] Although it often takes the U.S. Copyright Office several months to review an application and issue a certificate, the effective date of registration is the date the complete application was submitted to the U.S. Copyright Office.[21]
Generally, a copyright claimant (the person or entity claiming ownership of the rights in the work) will need to provide the following information in a copyright application. There may be somewhat different information required for work that were “made for hire” as discussed above.
In addition to providing these details, the claimant must submit at least one, and often two, “best edition” copies of the work, known as the “deposit copies.” Often, this means providing two original books, photographs, film reels, etc. The deposit copies are the most important part of the application. Although it is possible to submit amendments to correct mistakes made on the application form itself, it is very difficult to correct the deposit. If the wrong deposit is submitted, the application/registration may become invalid, and a new application will need to be filed, resulting in the loss of the earlier filing date.
Prior to March 1, 1989, the copyright law required copyright notice, in a particular form, to be affixed to published copies of copyrighted works. On March 1, 1989, when the United States acceded to the Berne Convention, all mandatory notice requirements for works published on or after that date were eliminated. Prior notice requirements still apply to works published prior to March 1, 1989.
Although copyright notice no longer is required to be affixed to works first published in the United States on or after March 1, 1989, the use of such notice virtually eliminates a defense of innocent infringement. For this reason, copyright owners would be wise to continue to use a copyright notice on works publicly distributed in the United States. It is also advisable to affix a modified form of the notice to copies of unpublished works, as a precaution, to put potential copiers on notice that copyright is claimed in the work.
The notice for published works, regardless of when they were published, consists of the following three elements:
Examples of notice include:
For visually perceptible published works:
© 2007 Marc Finnegan. All Rights Reserved.
For sound recordings:
2001 Esq Records, Inc. All Rights Reserved.
In addition, if copyright notice is affixed to unpublished works as a precaution, it is advisable to state in the notice that the work is unpublished, as follows:
© Widget Enterprises (Unpublished Work). All Rights Reserved.
The notice should be affixed to copies in such a manner and location as to give reasonable notice of the claim of copyright. Ideally, the copyright notice should be affixed in accordance with the guidelines of the U.S. Copyright Office that relate specifically to the type of work to which the notice is being affixed. These guidelines are set forth in 37 C.F.R. § 201.20.
The duration of copyright protection is complicated and depends on various factors, including when the work was created and whether or not it was a work made for hire. Works created in 1990 or later by individual authors generally enjoy copyright protection for the life of the author, plus 70 years.[23] The period of copyright protection for works created by joint authors is 70 years from the date that the last joint author dies.[24] The period of copyright protection for works made for hire, anonymous works, or pseudonymous works, is 95 years from the year of first publication, or 120 years from the year of creation, whichever expires first. In the case of an anonymous or pseudonymous work where the true identity of the author later becomes known, the term of protection reverts to the life of the author, plus 70 years.[25]
If a work cannot be classified as a work made for hire or there is a desire to acquire a work after its creation (e.g., a company wants to use an existing photograph on a new product package), copyright rights may be secured via an assignment or license. Assignments and exclusive licenses must be in writing and signed by the parties.[26] A copyright can also be bequeathed.
An assignment is the acquisition of all right, title, and interest to and in a work so that the original author and/or owner no longer has any rights to assert except the termination right discussed above. This is the most complete form copyright transfer (except a work-made-for-use), as the author does not retain any rights to exploit the work in any way. Occasionally such assignment contracts include an agreement to attribute the work to the original author or to allow the author to use the work as an example of their capabilities (i.e. a limited license back), but the exclusive ownership rights, discussed below, transfer to the new owner.
An exclusive license is one in which the author maintains his or her ownership of the work, but grants to the licensee the right to exploit the work in the manner detailed in the license. The “exclusivity” can be total, limited geographically, limited by product, or whatever parameters the parties agree to. For example, Company A can obtain an exclusive license from a photographer to use an image in connection with a food product worldwide, but allow the author to further license the work for other purposes. An exclusive license must in writing and be signed by the parties. An exclusive license also bars the owner from using the work in the manner described in the license. A license in which the owner of the copyright maintains the rights described in the license for their own use (but not by any other third party) is referred to as a “sole license.”
In contrast, a non-exclusive license, which can be oral, grants Company A right to use the work as detailed in the license, but does not prohibit the author from exploiting identical rights with another party. An implied license is a non-exclusive license that is implied by the courts from the conduct of the parties. For example, an advertising agency is hired to design a logo for a new product. The logo is used by Company A for many years with no objection by the agency, even though there was no contract specifically governing the use of the logo. A court could find that the course of dealing between the parties created an implied license.
Ideally, all contracts would be structured as work made for hire agreements and include assignment language so that if the work cannot be a work made for hire, the receiving party nonetheless owns the work via assignment. Where a work made for hire agreement is impractical or contrary to law, an assignment of all rights generates the strongest and most-easily enforceable rights. However, if a work will be used only for a limited purpose, an exclusive (or even non-exclusive) license may be the most cost-effective approach. In any event, a written agreement is the best tool to prevent uncertainty and litigation after the receiving party begins to exploit the copyright.
[1] 17 U.S.C. § 101; Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1010 (2017) (ornamental features of a “useful” article are protectable under a two-part test if they (1) can be identified separately from, and (2) exist independently of, the utilitarian aspects of the article, i.e., as an independently copyrightable work).
[2] Galiano v. Harrah’s Operating Co., 416 F.3d 411 (5th Cir. 2005).
[3] Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir. 1978).
[4] Belding Heminway Co. v. Future Fashions, Inc., 143 F.2d 216, 218 (2d Cir. 1944).
[5] Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985).
[6] Mazer v. Stein, 347 U.S. 201 (1954).
[7] 37 C.F.R. § 202.1 (2003).
[8] See Chapter X on Trade Secrets for more on how to protect recipes.
[9] See, e.g., Atari Games Corp. v. Oman, 888 F.2d 878, 882 (D.C. Cir. 1989).
[10] 17 U.S.C. §101.
[11] 17 U.S.C. § 102(a).
[12] 17 U.S.C. §101.
[13] 17 U.S.C. § 201(a).
[14] 17 U.S.C. § 201(b).
[15] 17 U.S.C. §101 (definition of “work made for hire”).
[16] 17 U.S.C. §§ 302 and 408.
[17] 17 U.S.C. § 411; Fourth Est. Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019).
[18] As of April 2021, the basic application fee is $45 per work. A complete current fee schedule can be found at www.copyright.gov.
[19] 17 U.S.C. § 410(c).
[20] The official website for the U.S. Copyright Office is www.copyright.gov.
[21] For an additional fee of $800, a claimant may be able to request expedited service (known as “special handling”). Special handling is not available to all claimants who are willing to pay, but is limited to three exigent circumstances. See U.S. Copyright Office Circular 10.
[22] 17 U.S.C. § 401 (b)(2).
[23] 17 U.S.C. § 302(a).
[24] 17 U.S.C. § 302(b).
[25] 17 U.S.C. § 302(c).
[26] 17 U.S.C. 204(a).
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